DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 4, 5, 7 and 10-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
These claims recite the limitation “the austenitic alloy” but two previous alloys have been mentioned, 316L steel and 904L steel. There is insufficient antecedent basis for this limitation in the claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 4, 5, 7, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Karsten EP 3709099 in view of De Almeida Graca, US 2018/0046141 and Matthey NPL as evidenced by Silvant, US 2020/0050153.
Regarding claim 1, Karsten discloses an assembly comprising a balance (figure 4) including a hub (2) connected to a felloe (1) by at least one arm, at least the felloe being made of a material (Phynox, [0114]) whose relative magnetic permeability is less than 1.01, whose density is greater than 6.5, and which is electrically insulating (Phynox inherently has these physical material properties).
Karsten does not explicitly disclose the felloe is made of 316L steel or a staff arranged to receive said balance, the staff also being made of 904L steel.
De Almeida Graca discloses a winding device of a timepiece movement made of a material consisting of a 316L steel [0027]. This austenitic alloy can also be 304L or 904L [0037].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Karsten to use an austenitic steel alloy taught in De Almeida Graca because he states: “the invention even makes it possible to reduce the friction torques over time, which enables the winding device to improve its performance while aging.”
Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, De Almeida Graca and Silvant [0031] disclose the claimed alloy in use in similar applications and a known equivalent of Phynox. Therefore, it would have been an obvious choice to use the claimed materials instead.
Regarding claim 2, Karsten and De Almeida Graca disclose the material has an electrical conductivity of preferably less than or equal to 2.5 MS/m, and more preferably less than 1.5 MS/m (316L steel is disclosed to have these physical material properties).
Regarding claim 4, Karsten and De Almeida Graca disclose the material is made from an alloy which contains iron, chromium, nickel and/or cobalt as its main constituents (316L Steel).
Regarding claim 5, Karsten and De Almeida Graca disclose the material has a face-centred cubic crystal structure (316L steel has a face-centered cubic crystal structure).
Regarding claim 7, Karsten and De Almeida Graca disclose the austenitic alloy has a chromium content greater than 10%, and preferably greater than 15% (316L steel has above 15% chromium).
Regarding claim 9, Karsten and De Almeida Graca disclose a movement comprising the assembly according to claim 1 (Fig 1).
Regarding claim 10, Karsten and De Almeida Graca disclose the austenitic alloy has an electrical conductivity less than or equal to 1.5 MS/m (316L steel).
Regarding claim 11, Karsten and De Almeida Graca disclose the austenitic alloy has a chromium content greater than 15%.
Regarding claim 12, Karsten and De Almeida Graca disclose the balance is made of the austenitic alloy, and wherein the austenitic alloy of the staff and of the balance has a chromium content greater than 15%.
Regarding claim 14, De Almeida Graca discloses the use of 316L steel but does not disclose the chemical composition. Matthey NPL discloses that 316L steel is virtually identical to the claimed composition.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the claimed composition of 316L steel since a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, Titanium Metals Corp, of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Karsten, De Almeida Graca and Matthey in view of Fussinger, US 2018/0024502.
Karsten, De Almeida Graca and Matthey do not explicitly disclose a balance has a decorative layer by electroplating PVD or CVD, and wherein the staff is coated with a layer including nickel-phosphorus (NiP) or nickel- boron (NiB).
Fussinger discloses a balance with a NiP layer (abstract, [0069] and see claim 17).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to coat the balance with a NiP layer for the purpose of hardening and because Fussinger states: “This selective hardening of pivots 3 of balance staff 1 makes it possible to combine advantages like low sensitivity to magnetic fields and mechanical properties allowing a very good shock resistance to be obtained, in the main stress areas”.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON COLLINS whose telephone number is (571)270-3994. The examiner can normally be reached 9:30 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Luebke can be reached at 571-272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON M COLLINS/ Examiner, Art Unit 2831
/EDWIN A. LEON/ Primary Examiner, Art Unit 2831
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